adr

WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Case No. D2011-0883

1. The Parties

Complainant is Colorfx, Inc. of California, United States of America, represented by Patel & Alumit, PC, United States of America.

Respondent is Moniker Privacy Services of Florida, United States of America / Registrant [3636284]: Domain Administrator monikerwhois7@gmail.com Port Media of Hongkong, China, represented by ESQwire.com PC, United States of America.

2. The Domain Name and Registrar

The disputed domain name <colorfx.com> is registered with Moniker Online Services, LLC (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on May 24, 2011. On May 24, 2011, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On May 25, 2011, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the disputed domain name which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to the Complainant on June 1, 2011 providing the registrant and contact information disclosed by the Registrar, and inviting Complainant to submit an amendment to the Complaint. In its email of June 10, 2011 to the Center, Complainant indicated that it was not going to file an amended Complaint.

The Center verified that the Complaint satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (the “Policy” or “UDRP”), the Rules for Uniform Domain Name Dispute Resolution Policy (the “Rules”), and the WIPO Supplemental Rules for Uniform Domain Name Dispute Resolution Policy (the “Supplemental Rules”).

In accordance with the Rules, paragraphs 2(a) and 4(a), the Center formally notified the Respondent of the Complaint, and the proceedings commenced June 10, 2011. In accordance with the Rules, paragraph 5(a), the due date for Response was June 30, 2011. The Response was received by the Center on July 1, 2011. In its Response, Respondent opted for a three-member panel to decide this matter.

On August 15, 2011, the Center received a supplemental filing from Complainant. By its email of August 17, 2011, the Center explained that the Rules do not provide for the submission of supplemental filings, but that the Panel will be informed of the Center’s receipt thereof upon its appointment.

The Center appointed Arne Ringnes, Ana María Pacón and The Hon Neil Brown QC as panelists in this matter on August 19, 2011. The Panel finds that it was properly constituted. Each member of the Panel has submitted the Statement of Acceptance and Declaration of Impartiality and Independence, as required by the Center to ensure compliance with the Rules, paragraph 7.

The Panel, in the exercise of its discretion, decided not to admit the supplementary filing.

4. Factual Background

The case concerns the domain name <colorfx.com>. The domain name has been registered at least from November 1998 and was acquired by Respondent on September 13, 2001. Since then, the Respondent has used the domain name for its website. Through this period, the Respondent has provided Pay-Per-Click Advertising (PPC) links to third party websites i.e. to color printing services.

Complainant began using the mark COLORFX through its predecessor and current president in 1995, Mr. Ross Avedissian. On April 22, 1996, Mr. Avedissian filed a fictitious business name for Color Fx. Complainant has not registered COLORFX as a trademark, and claims that the trademark rights have been acquired through use.

Complainant began offering its printing services online on November 11, 1998 under the domain name <colorfxink.com> with an online retail store selling business cards, envelopes, catalogues, calendars, packaging, brochures, newsletters, flyers etc. Around 2000, Complainant considered registering the domain name <colorfx.com>, but learned that the domain name was not available. On a number of occasions, Complainant has been in contact with Respondent regarding purchase this domain name, and it is informed that communications between Complainant and Respondent occurred by e-mail and telephone conversations in mid-2003, 2005, 2006, 2007, 2009, 2010 and recently on January 2011. In each of these communications, Respondent’s initial offer has been above USD 5,000, and too high to be accepted by the Complainant.

5. Parties’ Contentions

A. Complainant

Complainant contends that it has acquired trademark rights to COLORFX though use under United States law. Complainant has used the mark COLORFX in connection with printing services since 1995 and online printing services since November 30, 1998 in the United States. Between 1998 to the present, Complainant has spent more than USD 1,000,000 on online advertising and more than USD 40,000 in revenues. Complainant further states, to the best of its knowledge, that no other persons have ever provided online printing services under the mark COLORFX.

With respect to the distinctiveness of COLORFX mark, Complainant contends that the letters “fx” are an acronym for special/sound effects. According to Complainant, the mark COLORFX would be understood to mean “color special/sound effects”, and as such does not describe Complainant’s online printing services, because there are no special/sound effects involved in its online printing services. Instead, the mark suggests that Complainant can provide custom print services.

Complainant further contends that Respondent has no rights or legitimate interests in respect of the disputed domain name.

In this respect, Complainant argues that the domain name is being used as a landing page for PPC advertising, and to offer links to Complainant’s competitors. Complainant further states that the term “Color Fx” is not a dictionary word and thus not legitimate, and that the links on Respondents website are based on the trademark value of the domain name <colorfx.com>. According to Complainant, Respondent’s actions demonstrate that it is in fact using the domain name <colorfx.com> for commercial use with intent for commercial gain by misleadingly divert consumers.

With respect to the communication between the parties regarding purchase of the domain name, Complainant did not purchase the name because the offer price was too high.

Complainant further argues that the disputed domain name was registered and is being used in bad faith. In this respect, Complainant argues that it has generated significant goodwill associated with the COLORFX trademark, and that Respondent registered the disputed domain name to benefit from PPC advertising generated by Complainant’s misdirected consumers.

Complainant further contends that the disputed domain name was also acquired primarily for the purpose of selling it to Complainant for valuable consideration in excess of Respondent’s out-of-pocket costs directly related to the domain name. Also, the Complainant holds that Respondent has concealed his identity by using Moniker Privacy Services in lieu of its own name and address, and that this in itself represents bad faith registration and use.

B. Respondent

Respondent contends that the Complaint should be barred by the doctrine of laches because Complainant waited nearly 10 years to initiate the proceeding. In the alternative, Respondent argues that the long delay also raises an inference that Complainant did not truly believe Respondent engaged in bad faith registration.

Respondent further contends that Complainant’s claim to common law trademark rights to the term “Color Fx” must fail. The term is descriptive because in its plain dictionary meaning, it refers to “color” and “effects”. Respondent argues that Complainant cannot prove secondary meaning, and that to demonstrate common law trademark rights to common words and their equivalence, secondary meaning must be established.

Respondent also refers to a Google search which, according to Complainant, shows that there are more than 91 million third-party users of the term “Color FX”. Respondent further contends to have a legitimate interest in the disputed domain name. In this respect, Respondent argues that the registration of domain names that contain common words are permissible on a first come – first serve basis, and such registration establishes Respondent’s legitimate interest as the disputed domain name was not registered with a trademark in mind. Respondent further argues that its legitimate interest is bolstered by the fact that it uses the disputed domain name in connection with the provision of related PPC (generic or descriptive) advertising links appearing on the website, for which it receives a share of the revenue. With respect to the links that have appeared relating to color printing during the nearly 10 years Respondent has owned the disputed domain name, these links do not represent a manifestation of Respondent’s intent, since the Respondent did not select them, and they do not establish bad faith on the part of Respondent.

Finally, Respondent argues, on this point, that Complainant, through its numerous offers to purchase the disputed domain between 2003 and 2011 has acknowledged Respondent’s legitimate interest in the disputed domain name.

Respondent further contends that the disputed domain name was not registered or used in bad faith. Respondent states that it had no knowledge of Complainant’s alleged common law mark for “Color Fx” when it registered the disputed domain name nearly a decade ago. Absent direct proof that a descriptive term domain name was registered solely for the purpose of profiting for a complainant’s trademark rights, there can be no finding of bad faith registration and use. Respondent further states that it is certainly not attempting to compete with Complainant, disrupt its business or prey on its mark in any way. Also, the long delay in taking action raises the inference that Complainant did not truly believe that disputed domain was registered in bad faith.

6. Discussion and Findings

As held above, the Panel has decided in the exercise of its discretion not to admit the supplementary filing from Complainant. There is no specific provision for supplementary filings under the Rules and this is ultimately a matter for the Panel in its discretion under the Rules (see The E.W. Scripps Company v. Sinologic Industries,
WIPO Case No. D2003-0447).

According to many decisions, the principles which should be applied in exercising this discretion are based on the purpose of the Policy and Rules of providing an expeditious and relatively inexpensive procedure for determining a certain type of domain name dispute. Thus, additional evidence or submissions should only be admitted in exceptional circumstances, such as where the party could not reasonably have known the existence or relevance of the further material when it made its primary submission. One of the matters which the Panel has to bear in mind is that the admission of a further submission from one party may lead the other party to submit a further document in reply, which may lead to a further submission by the first party, and so on (see i.e. Tribeca Film Center, Inc. v. Lorenzo Brusasco-MacKenzie,
WIPO Case No. D2000-1772, Pacific Fence & Wire Co. v. Pacific Fence and Jim Paradise,
WIPO Case No. D2001-0237).

In the present case, the Panel does not believe that there is an exceptional circumstance calling for the admission of further material from the Complainant. Furthermore, if the Complainant's request to file Supplemental Filings were to be admitted, the Panel would feel bound to afford the Respondent an opportunity to comment on them, and this could well lead to the endless merry-go-round of supplementary filings (see Saipem S.p.A. v. Vertical Axis Inc.,
WIPO Case No. D2010-0629). The Panel has therefore decided not to allow supplemental filing sought by the Complainant.

According to paragraph 15(a) of the Rules, the panel shall decide a complaint in accordance with the Policy, the Rules and any rules and principles of law that it deems applicable. The Policy, in paragraph 4(a), determines that three elements must be present and duly proven by a complainant to obtain relief. These elements are:

i. the domain name is identical or confusingly similar to a trademark or service mark in which the complainant has rights: and

ii. the respondent has no rights or legitimate interests in respect to the domain name: and

iii. the respondent’s domain name has been registered and is being used in bad faith.

A. Identical or Confusingly Similar

Complainant has not registered COLORFX as a trademark at the date of the Complaint. Thus, Complainant will have to establish its trademark rights as a common law trademark based on use. The term “color” is descriptive for the service that the mark is intended for. With respect to the abbreviation “fx”, it is the understanding of the Panel that this abbreviation is a commonly used acronym for “effects”. Thus, the word “colorfx” is at least to a large extent a descriptive term. In this situation, a secondary meaning must be established and it is Complainant who should prove such secondary meaning. In Volunteering Travel Solutions Pvt Ltd. v. Puran Tours, WIPO Case No. D2011-0865, the panel held:

“If the mark consists of descriptive words it requires a greater degree of proof and the onus on the Complainant is proportionally higher for establishing rights acquired through secondary meaning in the trademark. See Jason Hachkowski v LucasBarnesWIPO Case No. D2009-1800, (<aidsdrugsonline.com> (the more descriptive the term the more extensive must be the use to show that the mark has acquired secondary meaning to become distinctive of a particular company). Evidence to establish that the mark has acquired secondary meaning would include the length of use of the mark and the sales turnover under the mark, figures for the advertisement and promotion of the mark and the nature of advertisement, media recognition of the mark.”

Complainant has not submitted any evidence to substantiate that “colorfx” has gained a secondary meaning as a mark for Complainant’s services or products.

To prove secondary meaning, consumers must associate the term “colorfx” with a particular source or sponsor. The Panel has noted that according to a Google search for the term “colorfx”, not only Complainant but also other companies offering services within color printing and similar services use the word “colorfx”.

Thus, the Panel concludes that Complainant has not established trademark rights under common law, and does not have a trademark which can be invoked under the Rules. Thus, the Complainant has not satisfied the first condition under the Policy.

B. Rights or Legitimate Interests

The Panel finds that Respondent has a legitimate interest in the disputed domain name. The Respondent has been using the disputed domain name for nearly 10 years, and until 2005 Respondent’s website did not contain links to printing services. Thus, it can be no doubt that Respondent for a number of years used the domain name for a bona fide offering of goods and services. Thereafter, since 2005, links to color printing have occasionally been provided. Such links were PPC links, and were not selected by Respondent according to a witness declaration from Respondent. Also, there is a vast third-party use of the term “colorfx”, which further substantiates that Respondent has a legitimate interest in using the term.

The Panel thus concludes that the second condition under the Policy is not fulfilled.

C. Registered and Used in Bad Faith

Complainant has not put forward any evidence that could show bad faith use. On the contrary, the Panel is of the opinion that the fact that Complainant has waited almost 10 years before taking action against the Respondent despite knowledge of the disputed domain name and numerous communications to purchase the domain name, substantiates that the Respondent has acted in good faith. Inactivity during such a very long time may also indicate that Complainant did not truly believe that the disputed domain name was registered in bad faith and may additionally in this case have given Respondent the understanding that its use of the disputed domain name was not objected to by Complainant.

The Panel concludes that Complainant has not fulfilled the third condition under the Policy.